Fair Winds to Copyright Holders: States Have Sovereign Immunity from Infringement Suits

On March 23, 2020, the United States Supreme Court held that the Copyright Remedy Clarification Act of 1990 (CRCA) is unconstitutional and therefore invalid. SeeAllen v. Cooper, No. 18-877, 589 U.S. ___ (2020). Prior to Allen, the CRCA provided a means for individuals to sue states for copyright infringement by expressly abrogating the states’ sovereign immunity in that realm. But as a result of the Court’s recent decision, states are once again totally immune from copyright infringement lawsuits.

The facts of Allen date back to 1718, when the infamous pirate Blackbeard ran his flagship vessel (the Queen Anne’s Revenge) aground on a sandbar off the coast of what is now North Carolina, causing the ship to sink. The shipwreck was discovered nearly 300 years later, and due to its location, the wreck itself is owned by North Carolina state. Upon learning of the discovery, the state of North Carolina hired a salvage company to excavate the wreck, which in turn hired Allen to document the numerous recovery missions. For over a decade, Allen photographed and filmed the underwater missions to salvage the shipwreck, and Allen registered copyrights in all of the works. This dispute arose from Allen’s claims that North Carolina had infringed some of those copyrights by using and reproducing Allen’s photographs and videos online without his permission. See Allen, No. 18-877, slip op. at 1–2.

The general rule regarding states’ sovereign immunity is that a state is immune from any lawsuit to which it has not consented, but Congress may abrogate that sovereign immunity if the following two conditions are present: (1) “Congress must have enacted ‘unequivocal statutory language’ abrogating the States’ immunity from the suit;” and (2) “some constitutional provision must allow Congress to have thus encroached on the States’ sovereignty.” See Allen, No. 18-877, slip op. at 5 (quotingSeminole Tribe of Florida v. Florida, 517 U.S. 44, 56 (1996); and Kimel v. Florida Board of Regents, 528 U.S. 62, 78 (2000)).

In the district court, North Carolina moved to dismiss Allen’s complaint based on its sovereign immunity, arguing that it had not consented to Allen’s bringing of the suit. Allen, on the other hand, argued that Congress expressly allowed for states to be sued for copyright infringement under the CRCA. The district court agreed with Allen and denied North Carolina’s motion to dismiss. See Allen, No. 18-877, slip op. at 2–3.

Notably, however, the Supreme Court had already held that the Patent Remedy Clarification Act of 1990 (the CRCA’s sister statute holding states liable for patent infringement) was unconstitutional in Florida Prepaid Postsecondary Education Expense Board v. College Savings Bank, 527 U.S. 627 (1999). Thus, on interlocutory appeal, the Fourth Circuit reversed, largely relying on the Supreme Court’s decision in Florida Prepaid. And on certiorari review, the Supreme Court affirmed the Fourth Circuit’s decision, also based on its Florida Prepaid decision. See Allen, No. 18-877, slip op. at 16 (“Florida Prepaid all but prewrote our decision today.”). Indeed, the facts and decisions in Allen must be viewed against the backdrop of the Supreme Court’s decision in Florida Prepaid.

In Allen, there was no dispute that Congress had used unequivocal language to abrogate the states’ sovereign immunity from copyright infringement lawsuits. Thus, the only question presented was whether Congress had the constitutional authority to pass the CRCA. See Allen, No. 18-877, slip op. at 5. To that end, Allen argued that Congress has authority to abrogate the states’ sovereign immunity from copyright infringement suits, based on either (1) Article I of the Constitution (i.e., the Intellectual Property Clause) or (2) section 5 of the Fourteenth Amendment, which authorizes Congress to enforce the provisions of the Due Process Clause of the Fourteenth Amendment’s section 1. Id.

First, Allen looked to Article I of the Constitution, which bestows upon Congress, inter alia, the power to grant limited-term monopolies for artistic works and inventions in the form of copyrights and patents. See Art. 1, § 8, cl. 8. Thus, Allen argued, it naturally follows that Congress has the right to abrogate sovereign immunity for infringement of such rights. However, the Court explained that “‘Article I cannot be used to circumvent’ the limits sovereign immunity ‘place[s] upon federal jurisdiction.'” Allen, No. 18-877, slip op. at 6–7 (quotingSeminole Tribe, 517 U.S. at 73) (“The problem for Allen is that this Court has already rejected his theory.”). Rather, the Court noted, its prior decision in Seminole Tribe controlled both its subsequent decision in Florida Prepaid and its current decision in Allen. In short, according to precedent, Congress cannot rely upon the Intellectual Property Clause to abrogate states’ sovereign immunity. See Allen, No. 18-877, slip op. at 6.

As to Allen’s second argument, the general rule is that section 5 of the Fourteenth Amendment does grant Congress the power to abrogate the states’ sovereign immunity, but only if the abrogation is “congruent and proportional” to the Fourteenth Amendment injury at stake. Therefore, the question in Allen was whether the CRCA was congruent and proportional to the Fourteenth Amendment’s protections against depriving copyright holders of their copyrights, which are a form of property, without due process. Allen, No. 18-877, slip op. at 11.

Critically, Supreme Court precedent dictates that “an infringement must be intentional, or at least reckless, to come within the reach of the Due Process Clause.” Id. (citingDaniels v. Williams, 474 U.S. 327, 328 (1986)). Indeed, the crux of the Florida Prepaid decision—and consequently, the decision in Allen—is that any statute that abrogates sovereign immunity for infringement lawsuits must limit its abrogation to those cases involving intentional or reckless infringement. Alternatively, the statute must have been enacted in response to, and upon evidence of, a pattern of unconstitutional infringement. But as the Allen Court explained, both the PRCA and the CRCA failed this test. Thus, based on this rule, the Florida Prepaid Court held that Congress acted beyond its authority by passing the PRCA, which subjected states to all patent infringement lawsuits brought against them (rather than just those cases of intentional infringement). See Florida Prepaid, 527 U.S. at 647. Similarly, the Allen Court held that Congress also lacked authority to pass the CRCA, which subjected states to all copyright infringement lawsuits brought against them. Allen, No. 18-877, slip op. at 11–16.

The Court’s decision in Allen is as alarming as it is unsurprising. Indeed, copyright holders should be wary that states are now free to infringe all copyrights without inhibition, and that this will be the case unless and until Congress passes another, narrower version of the CRCA. As Justice Breyer explained in concurrence:

[O]ne might think that Walt Disney Pictures could sue a State (or anyone else) for hosting an unlicensed screening of the studio’s 2003 blockbuster film, Pirates of the Caribbean (or any one of its many sequels).

Yet the Court holds otherwise. In its view, Congress’ power under the Intellectual Property Clause cannot support a federal law providing that, when proven to have pirated intellectual property, States must pay for what they plundered. . . . Whether a future legislative effort along those lines will pass constitutional muster is anyone’s guess. But faced with the risk of unfairness to authors and inventors alike, perhaps Congress will venture into this great constitutional unknown.

Granted, the Court’s decision in Allen indicates that Congress could pass a constitutionally valid version of the CRCA by limiting its applicability to instances of intentional or reckless state copyright infringement. And in many ways, it is an invitation for Congress to do just that. See Allen, slip op. at 16 (“[Our] conclusion, however, need not prevent Congress from passing a valid copyright abrogation law in the future.”). But if Congress does not jump aboard, copyright holders can only hope that a state looking to use a copyrighted work will follow its moral compass by obtaining a license to do so.